Technology, Media and Telecommunications Bulletin

The development of artificial intelligence ("AI") is poised to radically change myriad aspects of our daily lives. As AI-based technologies gain in capability, it is likely that they will play a greater role in the development of intellectual property ("IP"). Have we reached a stage in the evolution of AI where the "machines" could independently create original and/or patentable material? The answer appears to be yes. In April 2016, The Next Rembrandt project unveiled a painting created by an AI algorithm
that mimics the subject matter and style of the famous artist almost indistinguishably. How will current IP regimes recognize the fruits of these inventive and creative processes? Should they be entitled to the same protection as works of human origin? There is no concern with the use of AI as tools, and concomitant with the advancement of AI technology has been its increasing role in the creative process. It is interesting to consider at what point a computer crosses the line from mere tool to inventor or author.

Even if computer-generated works were to be granted IP protection, it is unclear how ownership of the IP rights subsisting therein would be resolved, given that computers currently lack the legal capacity to own property. Consider that another type of non-human entity, namely corporations, already enjoys legal personality, so the grant of similar rights to computers would not be without precedent.

In part one, we will consider whether AI based technology could be considered an inventor under U.S. and Canadian patent laws. In part two, we will consider whether AI based technology could be considered an "author" of a copyrighted work.

Can AI based technology be an inventor?

Under U.S. patent law, an "inventor" is defined as the individual who invented or discovered the subject matter of the invention. However, the U.S. Patent Act does not define "individual". The USPTO's Manual of Patent Examining Procedure adds that an inventor is the individual who conceives the invention and reduces it to practice. Thus, a non-human entity must overcome two thresholds to be granted a U.S. patent: (1) the ability to perform the mental act of conception and reduction to practice,
and (2) such entity must be an "individual".

The hallmark of conception is the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." On this basis, it currently appears that the mental act of conception can only be performed by natural persons. However, the U.S. Patent Act provides that "[p]atentability shall not be negated by the manner in which the invention was made", suggesting that the product of the inventor's "mind" takes precedence
over the nature of the mental process itself.

On the assumption that AI systems will be capable of conceiving of the invention and reducing it to practice, the question becomes whether a computer can be considered an "individual", so as to fall within the definition of "inventor". The term "individual" is not defined in the statute; however, U.S. law provides that "[i]n determining the meaning of any Act of Congress…the [word]…'individual', shall include every infant member of the species homo sapiens". Moreover, the Federal Circuit has
opined that only natural persons can be "inventors". Thus, while the word "individual" appears to expressly include only natural persons; the extent to which it may also include computers will surely be the subject of future discussions.

Even if an AI-generated invention were granted patent protection, who would own it? U.S. patent law provides that the original applicant is presumed to be the owner of the patent, and the definition of "applicant" in 37 C.F.R. 1.42 refers to the inventor. As discussed above, an "inventor" must be an individual under U.S. patent law. As a result, it is unclear whether an AI applicant would be eligible to own a U.S. patent. It is possible that a human assignee of the invention would be recognized as the applicant
and would own the resulting patent, but this presupposes that a computer has the legal capacity to assign property.

Unlike the U.S., the Canadian Patent Act does not restrict who can be an inventor. The Canadian Patent Act provides that a patent will be granted to "the inventor", without defining this term. As such, Canadian courts have formulated tests for defining an "inventor" in the context of patent litigation. The leading case is the Supreme Court of Canada's ("SCC") decision in Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77, where generic drug manufacturers were challenging the validity
of a patent on the basis that the description was misleading because it failed to name certain parties as co-inventors. The SCC held that "the inventor is the person or persons who conceived of the 'new and useful' art, process, machine, manufacture or composition of matter, or any 'new and useful' improvement thereto. The ultimate question must therefore be: who is responsible for the inventive concept?" Thus, an inventor must be a "person", and as in the U.S., it is the inventor's ability to conceive of the
invention that opens the door to patent protection. While there is no individuality restriction unlike in the U.S., Canadian patent law may not be more "computer-friendly" because it still requires conception and reduction to a definite and practical shape.

If such an invention were to be granted patent protection, Canadian patent law would confer ownership on the inventor or his/her assignee. It is unclear, however, whether AI technology would be recognized as having the legal capacity to own or assign property. Thus, the issue of ownership of patents for AI-generated inventions in Canada remains unresolved.

Given the ever changing landscape of AI based technology and legal developments, those involved in AI would be well advised to seek guidance on how to best leverage technological advancement to improve the efficiency and efficacy of their creative processes, while navigating the law's position on inventions by non-humans so as to maintain their IP entitlements.

[1] An extended version of this and next month's bulletins will be published in the August 2018 issue of DRI's For The Defense.